DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-8 and 10 is/are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kagawa et al. (Kagawa, US PGPub 2011/0008580).
Referring to Claim 1, Kagawa teaches at least one plastic film (Fig. 1a #10; [0059]) and two linearly-scratched thin metal films (Fig. 1a #11; [0061] also see Fig. 12 for plurality and stacking), each of said linearly-scratched thin metal films having large numbers of substantially parallel, intermittent, linear scratches (Fig. 1b #12; [0062]) with irregular widths and intervals in plural directions, one linearly-scratched thin metal film having a surface resistivity of 150-210 Ω/square, and the other linearly-scratched thin metal film having a surface resistivity of 10-50 Ω/square; [0069] and [0089] teaches a surface resistance of 20-377 Ω/square which covers both ranges.
The claim does not limit the layers from being the same and as there is not a specific example the above combination can be achieved by routine optimization. Kagawa teaches the resistance is adjusted by the material and thickness of the thin metal film and the intervals and length of the linear scratches; [0069].
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date to modifiy Kagawa with the desired surface resistivity as through routine optimization as it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d454, 105 USQ 233,235 (CCPA 1995). Furthermore the specification contains no disclosure of either the critical nature of the dimensions claimed or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen dimensions or upon another variable recited in a claim, the applicant must show that the claimed dimensions or variable are critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990).
Referring to Claim 2, Kagawa teaches wherein a pair of plastic films each having a linearly-scratched thin metal film on one side are adhered to each other; See Fig. 12a and 12b.
Referring to Claim 3, Kagawa teaches wherein both linearly-scratched thin metal films are adhered to each other; See Fig. 12a and 12b.
Referring to Claim 4, Kagawa teaches wherein said near-field electromagnetic wave absorber is composed of one plastic film and two linearly-scratched thin metal films formed on both sides of said plastic film; this arrangement can be realized in the stack formed in fig. 14 as there is nothing in the claim stating that the it can only be a single stacked arrangement.
Referring to Claim 5, Kagawa teaches wherein both thin metal films are as thick as 20-100 nm; [0061].
Referring to Claim 6, Kagawa teaches wherein the linear scratches formed in both thin metal films are oriented in two directions with a crossing angle of 30-90°; [0066].
Referring to Claim 7, Kagawa teaches wherein one of said linearly-scratched thin metal films has a light transmittance of 2.5-3.5%, and the other has a light transmittance of 1-2.2%; see routine optimization rationale above, as this is a result to the modification the thin film.
Referring to Claim 8, Kagawa teaches wherein both thin metal films are made of aluminum; [0061].
Referring to Claim 10, Kagawa teaches wherein linear scratches formed in both thin metal films have widths in a range of 0.1-100 µm and 2-50 µm on average, and intervals in a range of 0.1-500 µm and 10-100 µm on average; [0063-0064].
Response to Arguments
Applicant's arguments filed 02 October 2025 have been fully considered but they are not persuasive. The Applicants arguments with respect the surface resistivity neither being anticipated or easily obtained from the prior art is not persuasive. While the Applicant points out that the prior art teaches surface resistivity of two different ranges, these are not limiting examples. The prior art teaches “…the following explanation is not restrictive, and various modifications may be made within the scope of the present invention.” As is the case the two films being limited to the described ranges is not the only possibility of the prior art. As the Examiner has pointed out, the desired surface resistance could be obtained through routine optimization and all of the conditions required to obtained the desired ranges is present in the prior art. As disclosed by the prior art, “…surface resistance of the thin metal film 11 can be adjusted by the material and thickness of the thin metal film 11, the widths, intervals and lengths of linear scratches 12, etc.” Applicant claims a wide range of widths and intervals in Claim 10, which is taught by the prior art in [0063-0064]. Given the wide range of widths and intervals, one of ordinary skill in the art would be able to easily try different ranges through routine experimentation to determine a desired resistance. As there is no claim or argument to criticality, experimentation within that range would not be out of the norm or require any special techniques to be performed. The thickness of the films also plays into the range of the surface reference and the prior art teaches the claimed range of thickness. As all of these ranges can be optimized in a routine manner by someone of ordinary skill in the art, the Examiner maintains the claimed surface resistance of the layers would be obvious to one of ordinary skill in the art. Further, EP2680683 teaches in [0009-0010] controlling the thickness of the pair of thin films can result in 20-150 Ω/square, and that a range of 10-30nm can result in 30-80 Ω/square. This is further evidence that simple changes to the films can achieve the desired resistance through routine experimentation that would be no undue burden to one of ordinary skill in the art. The Applicant has not persuasively argued or provided evidence of criticality that would make one of ordinary skill in the art believe the claimed limitations could not be obtained by all the information provided by the prior art, nor that there would be no motivation to do so. As the prior art envisions modifications to be made, the Examiner maintains the rejection is proper as the modifications provided through routine experimentation above would result in the claimed invention and still be within the scope of the prior art invention.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WHITNEY T MOORE whose telephone number is (571)270-3338. The examiner can normally be reached Monday-Friday from 7am-4pm.
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/WHITNEY MOORE/Primary Examiner, Art Unit 3646